How not to lose your site and millions of rubles due to patent disputes
The share of e-Commerce in the total volume of retail trade in Russia is growing every year. According to AKIT forecasts, the volume of the e-Commerce market by the end of 2017 will exceed 1.1 trillion rubles. More than 45% of Russian companies have their own website, and for many it is the main source of income. But our joint study with the Coordination center of the national domain of the Internet showed that Internet companies are in no hurry to consolidate their rights to domain names. Only 1.2% of them are protected as trademarks. This means that the owner of an unprotected site does not own the rights to the set of characters forming the domain name, and is vulnerable to claims from third parties.
Such insecurity can be costly. In February of this year the Arbitration court of Moscow under the claim of the Bolshoi theatre of Moscow forbade the hostel to use the trademark BOLSHOI in their name and domain name, and to satisfy the monetary claim of the plaintiff, sought 5 million rubles as compensation for infringement of the brand owner of the hostel, OOO "guest house". For a business with an annual revenue of 5.7 million rubles (data for 2016), such a payment is equivalent to a death sentence.
The above-mentioned compensation of 5 million rubles is the maximum amount of possible compensation (according to the civil code). Usually the site administrator risks much smaller amounts - from 50 000 to 100 000 rubles. But even in this approximation, the total amount of potential losses careless owners of sites in Runet can be estimated at 465 billion (for an average compensation 75 000 and the total number of domains .EN/.Of the Russian Federation, equal to 6.3 million).
1. The site owner can quite honestly, without suspecting anything, violate someone's rights to the registered trademark. Among 1.2% of matching domain names and trademarks owned by legal entities, in 75% of cases the domain owner and the trademark owner are different persons. These concepts should be distinguished in order to resolve potential disputes with the person concerned.
2. Promoted site may be interested in the so — called trademark squatters-persons professionally engaged in registration of trademarks for their subsequent resale, including threats of prosecution of the domain owner for violation of the rights to the registered trademark (the so-called "reverse takeover", when the domain is sued for violation of already registered trademark).
The threat is quite clear: according to our estimates, the largest group of trademark squatters owns the second largest portfolio of trademarks in Russia, only slightly inferior to the portfolio of Unilever (1029 registrations). Nevertheless, it is worth noting that those who own large portfolios of trademarks (such as LLC "New technologies", Trading house" MIR-2000", ADS VA" MIR", etc.), more often earn on their sale to interested parties than on the sonorous stories of" reverse takeover " of domain names. Litigation is more expensive than buying a sign, and it is often easier to resolve the issue through negotiations.
3. Current business partners can become exes tomorrow. After a conflict, one of them may rush to register a trademark for a once-joint business. The registration will be followed by an appeal to the court and an attempt to take away the site from the less agile participant of the disaster.
It is worth noting that the owners of large portfolios of trademarks have a more active judicial position than the professional players of the domain market. The amount of claims of copyright holders can be up to several million rubles. Publisher "Enlightenment" demanded 3.7 billion rubles for the cover of the textbook, the American Facebook Inc. demanded CFT CJSC (brand "Golden crown") to send her free of charge domain facebook.ru and the Corporation indicated article. 1515 of the civil code, providing for liability for the use of another's trademark in the form of compensation up to 5 million rubles or double the cost of a trademark license. A few years ago, the Supreme court of the Russian Federation confirmed the recovery of 500,000 rubles for violation of the rights of LLC "Gum gallery" Brands.
Sometimes a company whose violation of the brand has been painless for some time can be active. For example, the multimedia company Harman, which owns the brands AKG, JBL and a number of others, has intensified the fight against counterfeit products in Russia. Over the past six months, she has filed more than 60 lawsuits against various suppliers and sellers of acoustics. About a quarter of the claims have already been satisfied: for retail trade from violators of rights, compensation in the amount of 50 to 150 000 rubles was collected, and because of illegal wholesale sales, cases for the recovery of 1 million to 3 million rubles are under consideration.